Jonathan Auerbach

Ranked in Canada
WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Bronze - Individuals: prosecution and strategy

Bronze - Individuals: enforcement and litigation

Recommended - Individuals: transactions

Stikeman Elliot provides a wonderfully comprehensive service to a glittering roster of clients, but its capabilities in the transactional IP space are nothing short of brilliant. Its smooth negotiation skills, business nous and ability to view intangible assets through a commercial lens came in handy when assisting TELUS Corporation with its IP due diligence during its acquisition of ADT Security Services, one of Canada’s major security and automated solutions providers. Taking the lead on the matter were Jonathan Auerbach and Justine Whitehead. “A well-respected lawyer known for his expertise and personal approach to issues”, Jonathan is a big-picture thinker who offers holistic advice and incorporates business considerations into everything he does. Whitehead is managing partner of the Ottawa office, she makes sure clients are guided through each step of the process without a hitch, dispensing clear-cut advice and measured solutions at every turn. Joining them in the guide this year is Kevin Graham, a discerning choice for trademark infringement. He recently defended EZ Inflatables at the Federal Court against copyright and trademark infringement claims regarding inflatable toys.

Jonathan Auerbach's Profile

Jonathan Auerbach is a partner, patent agent and trademark agent in the Intellectual Property Group at Stikeman Elliott. Mr Auerbach has a broad range of experience in all aspects of intellectual property, with a particular emphasis on patent, trademark and copyright litigation, prosecution, licensing, counselling and transactions.

Mr Auerbach also has extensive experience in the acquisition, clearance, prosecution, enforcement and licensing of trademarks, including representing clients in trademark opposition proceedings and Section 45 expungement proceedings. He also advises clients on internet-related aspects of trademark and copyright law, including representing clients in domain name disputes.

His litigation practice focuses on IP infringement matters, enforcing against acts involving counterfeit products, the invalidation of intellectual property, registrations and IP contract dispute matters.

Mr Auerbach also practises intellectual property relating to business law, including the management and commercialisation of intellectual property and the identification of IP issues in corporate transactions. In this regard, he is routinely called upon to manage IP due diligence investigations and to review and analyse commercial agreements that relate to intellectual property and information technology. Mr Auerbach also prepares, negotiates and advises on licence agreements, sponsorship agreements, merchandising agreements, distributions agreements and purchase agreements as they pertain to intellectual property, information technology, software, e-commerce and related matters.

Mr Auerbach’s expertise in IP law is recognised by The Best Lawyers in Canada, Leaders League Innovation Technology and IP Guides and The Legal 500 Canada.

Firm Profile

Stikeman Elliott LLP is a global leader in Canadian business law, offering creative solutions to clients across Canada and around the world. The firm provides the highest quality counsel, decisive advice and workable solutions through offices located in Montréal, Toronto, Ottawa, Calgary, Vancouver, New York, London and Sydney. With an exceptional track record on multijurisdictional matters in the United States and internationally, Stikeman Elliott ranks as a top firm in its primary practice areas, including mergers and acquisitions, securities, business litigation, banking and finance, competition and foreign investment, tax, restructuring, energy, real estate, project development, intellectual property, employment and labour, and pensions.

Stikeman Elliott’s IP group takes a multidisciplinary approach to the practice of this area of law. This dynamic and highly creative team of professionals brings a vast range of training and experience to this and related practice areas. We provide our clients with innovative solutions to help them exploit their intellectual property to the fullest extent and in as many markets as possible, while reducing potential risks associated with said exploitation.

Stikeman Elliott counsels Canadian and foreign clients on the acquisition, protection and exploitation of IP rights, including patents, trademarks, industrial designs and copyright – in Canada and abroad. At Stikeman Elliott, we understand that intellectual property is an integral part of our clients’ assets, and its successful protection and exploitation is critical to their success. In addition to advising clients on the registration, licensing and assignment of IP rights, we have been increasingly called to assist clients with the IP implications of advanced technologies. To this end, the group provides critical strategic and legal support in the negotiation of confidentiality, commercial, research and employment agreements setting out the IP rights of business enterprises, their founders, employees and contractors.

Stikeman Elliott is uniquely positioned to help clients obtain effective remedies, through the courts or alternative dispute resolution procedures, for disputes arising from the development, sale, purchase and use of intellectual property in all its forms. Our litigators are experienced at all levels of court and before all relevant IP tribunals in Canada, including the Copyright Board, the Trademark Opposition Board, the Patent Appeal Board and the Patented Medicine Prices Review Board.

Stikeman Elliott understands that effectively leveraging intellectual property assets can generate significant revenue for many businesses, from primary resource companies, to manufacturers, retailers, and e-commerce operations. Our IP and technology lawyers negotiate agreements and deliver commercialisation strategies that enable clients to exploit their intellectual property to their full potential while protecting long-term interest in those assets. We also work with clients to establish effective monitoring and enforcement programmes to ensure that agreements are honoured.

Our areas of expertise include:

  • confidentiality agreements;
  • copyright;
  • data protection;
  • distribution agreements;
  • document records;
  • due diligence;
  • e-commerce;
  • franchise agreements;
  • industrial designs;
  • infringement, cancellation, opposition and enforcement proceedings;
  • joint development agreements;
  • licence agreements;
  • medical devices;
  • opinions (freedom to operate, patentability, trademark registrability and infringement opinions);
  • patents;
  • public policy;
  • registration of trademarks, patents, industrial designs and copyright;
  • regulatory approvals;
  • research agreements;
  • security interests;
  • software agreements;
  • supplier agreements;
  • title searching;
  • trade secrets; and
  • trademark

In 2021, Stikeman Elliott was ranked as a leading IP firm by the World Trademark Review 1000 2022: The World’s Leading Trademark Professionals. As Canada continues to be an important market for international companies, we are proud to provide our foreign clients with innovative solutions to help them exploit their intellectual property to the fullest extent.

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